Ex Parte Markle

Board of Patent Appeals and Interferences

Jul 24, 2009

11135549 (B.P.A.I. Jul. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte MARK W. MARKLE 8
____________________ 9
10
Appeal 2009-001695 11
Application 11/135,549 12
Technology Center 3700 13
____________________ 14
15
Decided:1 July 24, 2009 16
____________________ 17
18
Before LINDA E. HORNER, STEVEN D.A. MCCARTHY, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001695
Application 11/135,549

2
STATEMENT OF THE CASE 1
Mark W. Markle (Appellant) seeks our review under 35 U.S.C. § 134 2
of the final rejection of claims 21-30. We have jurisdiction under 35 U.S.C. 3
§ 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We AFFIRM-IN-PART. 7
8
THE INVENTION 9
The Appellant’s claimed invention is directed to a device for 10
chamfering an end of a pipe (Spec. 1:3-4). Claim 21, reproduced below, is 11
representative of the subject matter on appeal. 12
21. A device for chamfering a pipe, comprising: 13
a base plate, 14
said base plate having a top and a bottom, 15
means for rotating said base plate, 16
a cutter assembly, 17
said cutter assembly comprising: 18
a support block, 19
said support block having means for engaging and 20
tapering a surface of said pipe, and 21
said support block having means for engaging and 22
cutting off an end of said pipe. 23
24
THE REJECTIONS 25
The Examiner relies upon the following as evidence of 26
unpatentability: 27
Gambini US 3,515,029 Jun. 2, 1970 28
Erkfritz US 3,660,879 May 9, 1972 29
30
Appeal 2009-001695
Application 11/135,549

3
The following rejections by the Examiner are before us: 1
1. Claim 29 is rejected under 35 U.S.C. § 112, second paragraph, as 2
being indefinite for failing to particularly point out and distinctly 3
claim the subject matter which applicant regards as the invention. 4
2. Claims 21, 22 and 28-30 are rejected under 35 U.S.C. § 102(b) as 5
being anticipated by Gambini. 6
3. Claims 23-27 are rejected under 35 U.S.C. § 103(a) as being 7
unpatentable over Gambini in view of Erkfritz. 8
9
ISSUES 10
The issues before us are whether: (1) the Examiner erred in 11
concluding that claim 29 fails to particularly point out and distinctly claim 12
the Appellant’s invention (App. Br. 4-5), (2) Gambini’s cutting wheel 5a 13
engages and cuts off an end of pipe 20 as called for in claim 21 (App. Br. 6), 14
(3) Gambini’s nut 8 and guides 9 can be considered teeth as called for in 15
claim 29 (App. Br. 6), (4) Gambini’s nut 8 is secured to the top surface of 16
plate 1 as called for in claim 25 (App. Br. 7-8), and (5) Gambini’s guides 9 17
can be considered a slot having a plurality of enlarged portions spaced there 18
along as called for in claim 27 (App. Br. 8-9). 19
20
FINDINGS OF FACT 21
We find that the following enumerated findings are supported by at 22
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 23
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 24
proceedings before the Office). 25
Appeal 2009-001695
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4
The Appellants’ Invention 1
1. The Appellant’s Specification describes that the “[c]utter blade 8 2
will true the end of the pipe 20” (Spec. 6:15-16). 3
The Examiner’s Findings 4
Rejection of claims 21, 22 and 28-30 under 35 U.S.C. § 102 5
2. The Examiner finds that Gambini describes all of the limitations 6
called for in claims 21, 22 and 28-30 (Ans. 3-4). 7
3. Regarding claim 21: The Examiner finds that shaving is a form of 8
cutting. Therefore, when Gambini’s cutting wheel 5a shaves an 9
end of a pipe, Gambini’s cutting wheel is cutting off an end of a 10
pipe (Ans. 7). 11
4. Regarding claim 29: The Examiner finds that Gambini describes 12
teeth on the base plate 1, and teeth on the cutter assembly. In 13
particular, in Gambini, element 8 includes two recesses formed by 14
upper and lower portions of the nut 8 which the Examiner 15
considers to be teeth. Teeth 8 are on the cutting assembly 3. The 16
recess portions in both sides of the slot 9 are considered to be teeth. 17
The recess portions on the base plate 1 (fig. 3) are considered to be 18
teeth of the base plate 1 which engage the teeth on the element 8 19
(Ans. 4). 20
Rejection of claims 23-27 under 35 U.S.C. § 103 21
5. The Examiner finds that Gambini describes almost all of the 22
limitations called for in claims 23-27 (Ans. 4-5). 23
6. Regarding claim 23: The Examiner finds that Gambini does not 24
describe that the aperture in the support block 3a, 3b has a 25
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Application 11/135,549

5
threaded portion, and that the bolt or knob 6 is also threaded into 1
the aperture (Ans. 5). 2
7. The Examiner finds that Erkfritz describes that it is old and well 3
known in the art to use a threaded aperture 28 in a support block 24 4
that engages a knob or a bolt 29 for securing a support block 24 to 5
a base plate 11 (Ans. 5). 6
8. Regarding claim 25: The Examiner finds that Gambini’s nut 8 is 7
considered to be a projection that projects from support block 3a 8
and is secured to the top of plate 1 via bolt 6 (Ans. 8). 9
9. Regarding claim 27: The Examiner finds that Gambini’s dovetail 10
slot (guides) 9 includes a series of elongated portions or slots that 11
are connected together to form a single elongated channel (Ans. 9). 12
This Board’s Findings 13
10. Gambini describes a base plate 1, a rotary shaft 2 for rotating the 14
base plate 1, and support blocks 3a, 3b. Support block 3a includes 15
a rotary cutting wheel 5a, and support block 3b includes a rotary 16
cutting wheel 5b (col. 2, ll. 34-49 and figs. 1 and 3). The support 17
blocks 3a, 3b are secured to the base plate 1 by bolts 6 and nuts 8, 18
wherein the bolts 6 are inserted through bores 7 in the blocks, and 19
nuts 8 are engaged in dovetail guides 9 in the base plate 1 (col. 2, 20
ll. 50-59 and figs. 1 and 3). Jaws 22 hold the tube 20 in position 21
(col. 4, ll. 4-9 and fig. 5). 22
11. Gambini further describes trimming a tubular part to form a flat 23
end face and a chamfer on a tube 20 (col. 2, ll. 6-11, col. 3, ll. 5-9 24
and 30, cl. 5, and figs. 1, 2, 6 and 8). 25
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6
12. Appellant has not contested the Examiner’s findings as to the 1
teachings of Erkfritz or the combinability of the teachings of 2
Gambini and Erkfritz (see App. Br. 7-9). 3
13. In contesting the rejection of claims 21, 22 and 28-30 under 35 4
U.S.C. § 102(b) as being unpatentable over Gambini, Appellant 5
provides no further contentions regarding claims 22, 28 and 30, 6
other than those presented for claim 21. 7
14. In contesting the rejection of claim 23-27 under 35 U.S.C. § 103(a) 8
as being unpatentable over Gambini in view of Erkfritz, Appellant 9
provides no further contentions regarding claims 23 and 24, other 10
than those presented for claim 21. 11
15. The ordinary meaning of the word “engage” includes “to bring 12
together, or mesh.” Merriam-Webster’s Collegiate Dictionary 13
(10th ed. 1996). 14
16. The ordinary meaning of the word “true” includes “to make level, 15
or square.” Merriam-Webster’s Collegiate Dictionary (10th ed. 16
1996). 17
17. The ordinary meaning of the word “tooth” includes “a projection 18
resembling or suggesting the tooth of an animal in shape, 19
arrangement, or action.” Merriam-Webster’s Collegiate 20
Dictionary (10th ed. 1996). 21
18. Additional findings as necessary appear in the Analysis portion of 22
this opinion. 23
Appeal 2009-001695
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7
PRINCIPLES OF LAW 1
Appellant’s Burden 2
Appellant has the burden on appeal to the Board to demonstrate error 3
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 4
2006) (“On appeal to the Board, an applicant can overcome a rejection 5
[under § 103] by showing insufficient evidence of prima facie obviousness 6
or by rebutting the prima facie case with evidence of secondary indicia of 7
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 8
1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614 (BPAI 2008) 9
[burden on appeal] (on appeal, applicant must show examiner erred); Ex 10
parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83 11
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509, 12
1519 (BPAI 2007). 13
35 U.S.C. § 112, 2nd paragraph 14
The test for definiteness under 35 U.S.C. § 112, second paragraph, is 15
whether “those skilled in the art would understand what is claimed when the 16
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety 17
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations 18
omitted). 19
35 U.S.C. § 112, 6th paragraph 20
An element in a claim for a combination may be 21
expressed as a means or step for performing a 22
specified function without the recital of structure, 23
material, or acts in support thereof, and such claim 24
shall be construed to cover the corresponding 25
structure, material, or acts described in the 26
specification and equivalents thereof. 27
35 U.S.C. § 112, 6th paragraph. 28
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Once a court concludes that a claim limitation is a means-plus-1
function limitation, two steps of claim construction remain. “The first step 2
in the construction of a means-plus-function claim element is to identify the 3
particular claimed function. The second step in the analysis is to look to the 4
specification and identify the corresponding structure for that function.” 5
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 6
1210 (Fed. Cir. 2003) (internal citations omitted). 7
Anticipation 8
“Anticipation is established only when a single prior art reference 9
discloses, expressly or under the principles of inherency, each and every 10
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys., 11
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “[t]here must be 12
no difference between the claimed invention and the reference disclosure, as 13
viewed by a person of ordinary skill in the field of the invention.” Scripps 14
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. 15
Cir. 1991). It is not necessary that the reference teach what the subject 16
application teaches, but only that the claim read on something disclosed in 17
the reference, i.e., that all of the limitations in the claim be found in or fully 18
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 19
(Fed. Cir. 1983). 20
Obviousness 21
“Section 103 forbids issuance of a patent when ‘the differences 22
between the subject matter sought to be patented and the prior art are such 23
that the subject matter as a whole would have been obvious at the time the 24
invention was made to a person having ordinary skill in the art to which said 25
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 26
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(2007). The question of obviousness is resolved on the basis of underlying 1
factual determinations including (1) the scope and content of the prior art, 2
(2) any differences between the claimed subject matter and the prior art, (3) 3
the level of skill in the art, and (4) where in evidence, so-called secondary 4
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 5
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 6
might be reordered in any particular case, the [Graham] factors continue to 7
define the inquiry that controls.”). 8
9
ANALYSIS 10
Rejection of claim 29 under 35 U.S.C. § 112 11
Appellant contends that since claim 29 depends from claim 28, it is 12
clear that the means clause being referenced in claim 29 is the means clause 13
called for in claim 28 (App. Br. 4). 14
Claim 29 depends from claim 28, which depends from claim 21. 15
Claim 21 calls for three “means” clauses (cl. 21, ll. 4, 8 and 10) and claim 28 16
calls for an additional “means” clause (cl. 28, l. 2) for a total of four 17
“means” clauses. In claim 29, the “means” clause “said means” does not 18
include an identifier to indicate which of the four previously claimed 19
“means” clauses it is referring back to. Therefore, we agree with the 20
Examiner that the limitation “wherein said means” fails to identify which 21
“means” clause previously called for in claims 21 and 28 it is referring back 22
to. 23
Appellant further contends that the limitation “means for cooperating” 24
called for in claim 28 is broader than the limitation “wherein said means is 25
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teeth” called for in claim 29, since the limitation “wherein said means is 1
teeth” narrows the limitation “means for cooperating” (App. Br. 5). 2
In claim 28, the “means” clause is called for as being both on the base 3
plate and for cooperating with the cutter assembly to hold the base plate and 4
the cutter assembly in position. In claim 29, the “means” clause is called for 5
as being both on the base pate and on the cutter assembly. Claim 29 is 6
inconsistent with claim 28 since teeth on the cutter assembly cannot 7
cooperate with the cutter assembly to hold the cutter assembly and the base 8
plate in position. We agree with the Examiner that it is unclear how the 9
“means” clause can be located on the cutter assembly and, at the same time, 10
cooperate with the cutter assembly. Therefore, we conclude that the 11
Appellant has not demonstrated that the Examiner erred in rejecting claim 29 12
as being indefinite. 13
14
Rejection of claims 21, 22 and 28-30 under 35 U.S.C. § 102(b) as being 15
anticipated by Gambini 16
17
Regarding claims 21, 22, 28 and 30 18
Appellant contends that Gambini’s cutting wheel 5a does not engage 19
and cut-off an end of pipe 20 as called for in claim 21 (App. Br. 6). 20
At issue is the claim limitation “means for engaging and cutting off an 21
end of said pipe” (cl. 21, lines 10-11). We find that the limitation “means 22
for engaging and cutting off an end of said pipe” is written in means-plus-23
function form and falls under 35 U.S.C. § 112, 6th paragraph. To 24
understand the metes and bounds of the limitation “means for engaging and 25
cutting off an end of said pipe,” we must: (1) identify the function of the 26
limitation; and (2) look to the specification and identify the corresponding 27
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structure for that function. See Med. Instrumentation, 344 F.3d at 1210. 1
The Appellant’s Specification describes that the “[c]utter blade 8 will true 2
the end of the pipe 20” (Fact 1). The ordinary meaning of the word 3
“engage” includes “to bring together, or mesh” (Fact 15). Further, the 4
ordinary meaning of the word “true” includes “to make level, or square” 5
(Fact 16). We find that the function of the limitation “means for engaging 6
and cutting off an end of said pipe” is to touch the end of the pipe and to 7
square off the end of the pipe. Further, we find that Appellant’s cutter 8 is 8
the corresponding structure that performs the function, that is, to touch the 9
end of the pipe and to square off the end of the pipe. 10
Gambini describes, inter alia, a support block 3a including a rotary 11
cutting wheel 5a and a support block 3b including a rotary cutting wheel 5b 12
for trimming a tubular part to form a flat end face and a chamfer, 13
respectively, on a tube 20 (Facts 10 and 11). 14
We find that in Gambini, when the cutting wheel 5a touches the tube 15
20, cutting wheel 5a engages the tube 20. We find that in Gambini, 16
trimming a tube 20 to form a flat end face is truing the end of the tube 20, 17
that is, to square off the end of the tube 20. Therefore, we see no error in the 18
Examiner’s finding that when Gambini’s cutting wheel 5a shaves an end of 19
a pipe (tube) 20, Gambini’s cutting wheel is cutting off an end of a pipe 20
(Fact 3). Therefore, we conclude that the Appellant has not demonstrated 21
that the Examiner erred in rejecting claim 21 over Gambini. Since there are 22
no further contentions regarding claims 22, 28 and 30 (Fact 13), the 23
Appellant has likewise not demonstrated error in the Examiner’s rejection of 24
claims 22, 28 and 30, which depend from claim 21. 25
26
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Regarding claim 29 1
Appellant contends that since Gambini describes element 8 as a nut 2
that engages dovetail guides 9, neither nut 8 nor guides 9 can be considered 3
teeth (App. Br. 6-7). The ordinary meaning of the word “tooth” includes “a 4
projection resembling or suggesting the tooth of an animal in shape, 5
arrangement, or action” (Fact 17). Neither nut 8 nor guides 9 includes a 6
projection resembling or suggesting the tooth of an animal in shape, 7
arrangement, or action. Further, Gambini does not describe teeth on the base 8
plate 1 and on the blocks 3a, 3b as found by the Examiner (Fact 4). 9
Accordingly, we find that Gambini does not describe the limitation “wherein 10
said means is teeth…” as called for in claim 29. Therefore, we conclude that 11
the Appellant has demonstrated that the Examiner erred in rejecting claim 29 12
over Gambini. 13
14
Rejection of claims 23-27 under 35 U.S.C. § 103(a) as being unpatentable 15
over Gambini in view of Erkfritz 16
17
Regarding claims 23 and 24 18
In contesting the rejection of claims 23-27 under 35 U.S.C. § 103(a) 19
as being unpatentable over Gambini in view of Erkfritz, Appellant provides 20
no further contentions regarding claims 23 and 24 than those presented for 21
claim 21 (Fact 14). Therefore, for the above reasons, the Appellant has 22
likewise not demonstrated error in the Examiner’s rejection of claims 23 and 23
24, which depend from claims 21 and 22, respectively. 24
25
26
27
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Regarding claims 25-26 1
Appellant contends that Gambini’s nut 8, which is secured within a 2
dovetail slot 9, is recessed in the top surface of plate 1, and is not secured to 3
the top surface of plate 1 as called for in claim 25 (App. Br. 7-8). Gambini’s 4
nuts 8 are engaged in dovetail guides 9 in the base plate 1 (Fact 10). 5
Gambini’s nuts 8 are not secured to the top surface of the base plate 1. 6
Therefore, Gambini does not describe “means for guiding ... secured to said 7
top surface of said face plate” (cl. 25, ll. 1-3) as found by the Examiner (Fact 8
10). Therefore, we conclude that the Appellant has demonstrated that the 9
Examiner erred in rejecting claim 25 over Gambini in view of Erkfritz. The 10
Appellant has likewise demonstrated error in the Examiner’s rejection of 11
claim 26, which depends from claim 25. 12
13
Regarding claim 27 14
Appellant contends that since Gambini describes only one enlarged 15
portion in slot 9, that is, the bottom portion of slot 9, Gambini does not 16
describe a slot having a plurality of enlarged portions spaced there along as 17
called for in claim 25 (App. Br. 8-9). Gambini’s dovetail guides 9 do not 18
include a plurality of enlarged portions (Fact 10). It is not apparent to us 19
how a single slot can be considered to be a series of elongated portions or 20
slots that are connected together to form a single elongated channel as found 21
by the Examiner (Fact 9). Therefore, we conclude that the Appellant has 22
demonstrated that the Examiner erred in rejecting claim 27 over Gambini in 23
view of Erkfritz. 24
25
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CONCLUSIONS OF LAW 1
We conclude that the Appellant has not shown that the Examiner 2
erred in rejecting claim 29 under 35 U.S.C. § 112 as being indefinite; claims 3
21, 22, 28 and 30 under 35 U.S.C. § 102(b) as being anticipated by Gambini; 4
and claims 23 and 24 under 35 U.S.C. § 103(a) as being unpatentable over 5
Gambini in view of Erkfritz. We conclude that the Appellant has shown that 6
the Examiner erred in rejecting claim 29 under 35 U.S.C. § 102(b) as being 7
anticipated by Gambini, and claims 25-27 under 35 U.S.C. § 103(a) as being 8
unpatentable over Gambini in view of Erkfritz. 9
10
DECISION 11
The decision of the Examiner to reject claim 29 under 35 U.S.C. 12
§ 112; claims 21, 22, 28 and 30 over Gambini; and claims 23 and 24 over 13
Gambini in view of Erkfritz is affirmed. The decision of the Examiner to 14
reject claim 29 over Gambini and claims 25-27 over Gambini in view of 15
Erkfritz is reversed. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 18
19
AFFIRMED-IN-PART 20
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mls 23
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PATENT & TRADEMARK SERVICES, INC. 25
6111 SADDLE HORN DR. 26
FAIRFAX, VA 22030 27